Appeal No. 1997-1285 Page 6
Application No. 08/307,153
conventional bonding method used by FR 196 in which an end panel sheet is bonded to a previously
injection molded outer layer in the Background of the Invention at column 2, lines 40-51. In column 3,
lines 49-54, Suzuki lists several advantages for replacing the conventional bonding process with an
insert injection molding process including a reduction in process steps and thus a reduction in
manufacturing cost. Suzuki, therefore, expressly suggests a reason to replace the conventional bonding
method of FR 196 with the insert injection molding method. Economic factors can render a claimed
invention obvious. In re Thompson, 545 F.2d 1290, 1294, 192 USPQ 275, 277 (CCPA 1976).
In regard to the second argument, the combination does not destroy what the examiner
proposes to retain. The examiner does not suggest retaining the handle of Suzuki in the product of the
combination. The art combination results in the formation of the product of FR 196 by the insert
injection molding process of Suzuki. The examiner is not suggesting that the end panel of FR 196 be
physically placed in the mold of Suzuki. One of ordinary skill in the art would have simply used an
injection mold with a cavity in the shape of the frame or peripheral portion 1 of FR 196 and placed the
panel 2 in that mold and then injected plastic into the mold cavity to form the frame in the shape of
peripheral portion 1 of FR 196. We conclude that the examiner has made out a prima facie case of
obviousness with respect to the subject matter of claim 26.
Claim 29 is dependent on claim 26 and further requires that the injection mold cavity include a
portion for forming a radially directed shelf portion on the frame member and to which the end panel is
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